SPOTLIGHT ON ENTERTAINMENT AND MEDIA LAW And The Band Played On Disputes Over Musical Group Names Were a Familiar Tune in 2013 On August 28, 2013, the founder of the classic rock band BOSTON and the owner of all of its trademarks lost a bid to prevent the band’s former lead singer from using the name BOSTON in connection with his ongoing musical career. This dispute over the BOSTON name is only one of several lawsuits over band names that were active in 2013, and is merely the latest in a long, rich history of such disputes. “Well I’m Takin’ My Time, son in federal court in Seattle, and immediately sought a I’m Just Movin’ On” preliminary injunction to prevent their continued references to their former relationship to BOSTON. Scholz v. Migliaccio, Donald Scholz, who earned bachelor’s and master’s Case No. C13-1229 JLR (W.D.Wash., filed July 12, 2013). degrees from MIT, formed BOSTON in the early 1970s. The Cosmos had “more than a feeling” that they The group’s eponymous debut album was released in 1976 were using the BOSTON name fairly, and the district court and ranks as one of the best-selling debut albums in US agreed. It denied Scholz’s request for a preliminary injunction, history. Fran Migliaccio, who was professionally known by finding that the Cosmos were likely to prevail on their the name Fran Cosmo, joined BOSTON defense that their use of the band’s name in 1992 and was the lead vocalist on constituted a permissible “nominative multiple BOSTON albums. He toured fair use.” This is the same legal principle, with the band until approximately 2002. recognized by the US Ninth Circuit Court Fran Cosmo’s son, Anthony, wrote songs of Appeals, that permitted a newspaper for BOSTON from 1999-2004, three of to use the name New Kids on the Block which were recorded on one of the group’s in connection with a reader poll to albums. He also toured with the band in determine which of the members of the 2003 and 2004 as a backing vocalist and “boy band” was the most popular, and guitarist. which allowed a former Playboy Playmate The Cosmo father and son currently perform of the Year to include references to her previous status on under their own name, as well as with a group called the her Internet website. See New Kids on the Block v. News America World Classic Rockers. Fran Cosmo promotes himself as Publishing, Inc. 971 F.2d 302 (9th Cir. 1992); Playboy Enterprises, “Fran Cosmo of BOSTON” and “BOSTON former lead Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002). It is also the rule singer Fran Cosmo.” Because BOSTON continues to tour of law that enables motion picture studios to promote nationally and internationally and to release new music, and their upcoming films with phrases like “by the director of ” because Scholz believed that the Cosmos’ use of the band’s a previously released film. But see Miramax Films Corp. v. name was causing confusion, Scholz sued the father and Columbia Pictures Entertainment, Inc., 996 F.Supp. 294 (S.D.N.Y. 2013 KATTEN MUCHIN ROSENMAN LLP 1998) (distributor of I Know What You Did Last Summer was enjoined band altogether lacks an agreement governing its members’ rights from promoting the film as “from the creators of Scream” because and obligations, or its agreement does not clearly establish what the only common link between the films was a screenwriter who rights, if any, band members have to use the group’s name once wrote an original screenplay for one of they have left the group. the films and adapted a Band members also often lack an understanding of what, novel for the screenplay of in the absence of an agreement, the law permits and prohibits. It the other). is one thing, for example, for a former band member to describe The court in herself as the group’s former lead vocalist; it is another thing for Scholz noted that under a departing band member to incorporate his old band’s name into Ninth Circuit case law, a the name of his new group. Another factor that contributes to commercial user is entitled litigation over the use of band names is rancor—lots of rancor. to use a trademark owner’s Just like a failed marriage or any other business partnership that mark to describe the trademark owner’s has soured, band split-ups are rarely emotion-free. Finally, many own product or services, even if the user’s disputes of this sort inexorably come down to money—and who ultimate objective is to describe his own gets to use the band’s name to make it. product or services; for example, a commercial for Pizza Hut that In 2013 alone, more than a half dozen such lawsuits makes a statement about Papa John’s pizza. In order to qualify have been active and almost certainly can be attributed to one for the “nominative fair use” defense, the following requirements or more of the foregoing factors. A dispute among the original must be met: (1) the product or service in question must not four members of the 1990s female R&B group En Vogue was be readily identifiable without the use of the trademark; (2) only decided by an arbitrator in January 2013. The arbitrator ruled that so much of the mark may be used as is reasonably necessary to founding members Terri Ellis and Cindy Herron-Braggs, as the identify the product or service; and (3) the user must do nothing two owners of the group’s limited liability company, owned the that would, in conjunction with the mark, suggest sponsorship exclusive rights to the band’s name, and that two former members, or endorsement by the Maxine Jones and Dawn trademark holder. “Another factor that contributes to litigation over Robinson, were “never The district gonna get it.” The court found that the the use of band names is rancor—lots of rancor.” arbitrator’s ruling was Cosmos were likely to confirmed by a federal satisfy the nominative fair use test. Both parties agreed that the court in March 2013. Braggs v. Jones, Case No. 12-CV-08493 JGB band BOSTON is not readily identifiable without the use of its (C.D.Cal. March 21, 2013). name. The only evidence of use presented to the court was that The rock band LĪVE achieved worldwide success with Fran Cosmo truthfully identified himself as the band’s former its 1994 album, Throwing Copper. LĪVE’s original lead singer, Ed lead vocalist; and, in fact, the evidence suggested that the Cosmos Kowalczyk, left the band in November 2009. When Kowalczyk went out of their way to ensure that the Cosmos’ names appeared began advertising and promoting his solo performances under larger than any reference to BOSTON, and that venues could the name “Ed Kowalczyk of LĪVE,” the band’s corporation filed not use the band’s name other than to identify Fran Cosmo as its suit, alleging trademark infringement, trademark dilution and other former lead singer. claims. Action Front Unlimited, Inc. v. Kowalczyk, Case No. 12-CV- 05483 JMF (S.D.N.Y., filed July 17, 2012). In response, Kowalczyk “When I Get Angry, I Say Things I Don’t countersued the corporation and the individual band members for Wanna Say” alleged breaches of fiduciary duty, misuse of trademarks and other Disputes between musical groups and former members claims. The parties reached a complete settlement in March 2013. over the use of their band’s name are nothing new. Any number of The 1980s hard rock band Great White split up in 2011, factors can contribute to such disagreements. Many entertainers with its former lead vocalist, Jack Russell, continuing to perform do not take the necessary steps to secure their ownership of as “Great White Featuring Jack Russell.” In 2012, Russell sued trademark and related rights, which can be especially problematic the rest of the band for continuing to perform as “Great White.” when musicians perform under a collective name. Either the Russell v. Kendall, Case No. 12-CV-02477 ODW (C.D.Cal., filed 2 SPOTLIGHT ON ENTERTAINMENT AND MEDIA LAW March 22, 2012). The band, in turn, objected to Russell performing Sledge Lightfoot, Case No. 13-CV-01327 DGC (D.Arizona, filed as “Great White Featuring Jack Russell.” Perhaps both sides July 2, 2013). Kathy Sledge is alleged to have left the group 25 feared being “once bitten, twice shy” by the ongoing litigation: years ago, but recently began booking tour dates using the name the dispute was settled in July 2013, with a “standstill” agreement “Sister Sledge” and/or “Sister Sledge Featuring Kathy Sledge.” that permitted the group to continue using its original name and She is also alleged to have been falsely advertising in some Russell to continue performing as “Great White Featuring Jack instances that all four of the group’s original members would Russell.” be performing and, in other instances, that she was the “only” Harold Winley sang “Love Potion No. 9” and other or “real” Sister Sledge and that the remaining original members hits with the R&B group The Clovers in the 1950s. Winley and of the group were inactive or retired. This lawsuit is also still another former bandmate, Harold Lucas, went on to perform pending. with separate musical groups, both of which called themselves The “It’s Been Such a Long Time” Clovers, and Lucas’ group eventually Bands and their former members have been fighting trademarked the name in the over the right to use their groups’ names for longer than rock ‘n’ 1980s.